DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on May 1, 2026. In particular, claim 1 includes the hydrocarbon resin and limits this to a C5/C9-based copolymer or a β-pinene. Also, claims 9-12 are newly presented. This combination of limitations was not present at the time of the previous office action. Thus, the following action is properly made final.
Claim Objections
Regarding claim 8, this should be cancelled because claim 4 has been cancelled.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-3, 5-8, 10 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miyazaki et al (US 2018/0099527).
Regarding claims 1-2, Miyazaki teaches a rubber composition (Abstract) for a tire ([0001]) tread ([0012]) comprising 100 parts by mass of a rubber which is 100% ([0038]) solution polymerized styrene-butadiene rubber ([0023]), 30 to 150 phr of silica ([0110]) and 0.5 to 50 phr of a plasticizer ([0099]). The plasticizer can be triethyl phosphate ([0074]) which is a trialkyl phosphate with 6 carbon atoms. Given the amounts of the silica and the trialkyl phosphate, the amount of the trialkyl phosphate can be calculated to range from 0.3 to 166% by mass of the silica which overlaps the claimed range of 1.5 to 20 % by mass. Miyazaki teaches that the composition further comprises a hydrocarbon-based resin such as a β-pinene resin ([0061]).
Miyazaki does not explicitly exemplify the recited invention, however, given the teachings within the specification of Miyazaki, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use the teachings to arrive at the presently claimed invention. Miyazaki teaches all the claimed components in amounts which overlap the claimed ranges. It would have been nothing more than using known components in a typical manner to achieve predictable results. KSR v. Teleflex, 550 U.S. _, 82 USPQ2d 1385 (2007).
Regarding claim 3, Miyazaki teaches that the sSBR can be modified ([0023]).
Regarding claim 5-8, Miyazaki teaches a tire comprising the rubber composition of claims 1-4 above used in a tread ([0134]).
Regarding claim 10, Miyazaki teaches that the composition can further comprise 0 to 40 parts by mass of a butadiene rubber ([0049]).
Regarding claim 12, Miyazaki teaches a tire comprising the rubber composition of claims 1-4 above used in a tread ([0134]).
Claim(s) 1-3 and 5-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hirose et al (US 2013/0059965, please refer to WO 2011/148965 for evidence) in view of Miyazaki et al (US 2018/0099527).
Regarding claims 1-2 and 9, Hirose teaches a rubber composition for a tread (Abstract) comprising: 30 parts of more of a solution polymerized styrene-butadiene rubber and between 30 to 60 parts by weight of an emulsion polymerized styrene-butadiene rubber (Table 1, Examples). Hirose teaches that the composition comprises 100 to 140 parts by weight of silica (0020]) and a hydrocarbon-based resin such as a β-pinene resin ([0027]). (It is noted that Hirose teaches a P-pinene resin, but this is actually β-pinene resin as show in paragraph [0026] of the corresponding WIPO document WO 2011/148965).
Miyazaki teaches a rubber composition (Abstract) for a tire ([0001]) tread ([0012]) comprising 100 parts by mass of a rubber which is 100% ([0038]) solution polymerized styrene-butadiene rubber ([0023]), 30 to 150 phr of silica ([0110]) and 0.5 to 50 phr of a plasticizer ([0099]).
Miyazaki teaches a rubber composition (Abstract) for a tire ([0001]) tread ([0012]) comprising a plasticizer can be triethyl phosphate ([0074]) which is a trialkyl phosphate with 6 carbon atoms and would be present in an amount from 1.5 to 20 mass % of the silica content.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the triethyl phosphate of Miyazaki into the rubber composition of Hirose. One would have been motivated to do so in order to receive the expected benefit of having excellent grip performance and excellent abrasion resistance (Miyazaki, [0069]).
Regarding claim 3, Hirose teaches that the solution polymerized styrene-butadiene rubber can be modified ([0010]).
Regarding claim 5-8, Hirose teaches a tire comprising the rubber composition of claims 1-4 above used in a tread ([0134]).
Regarding claim 10, Hirose teaches that the rubber composition contains from 20-50 parts by mass of a natural rubber (Table 1).
Regarding claim 11-12, Hirose teaches a tire comprising the rubber composition of claims 1-4 above used in a tread ([0134]).
Response to Arguments
Applicant's arguments filed May 1, 2026 have been fully considered but they are not persuasive for the reasons set forth below:
Applicant’s argument: The use of a C5/C9-based aliphatic/aromatic copolymer and/or b-pinene resin is antithetical to Miyazaki.
Examiner’s response: Miyazaki teaches that b-pinene can be used in the rubber composition in paragraph ([0060]).
Applicant’s argument: Miyzazki’s use of a solid resin with an SP value of 9.2 to 13 and/or a softening point of 130 C or higher is different than the claimed C5/C9 resin and β-pinene.
Examiner’s response: The claims do not recite the SP values or softening point in the claims and therefore are not within the scope of the claimed invention.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DORIS L LEE whose telephone number is (571)270-3872. The examiner can normally be reached M-F 8 am - 5 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
DORIS L. LEE
Primary Examiner
Art Unit 1764
/DORIS L LEE/Primary Examiner, Art Unit 1764
Prosecution Insights